Vedder Price is pleased to announce that Global Transportation Finance Shareholder John F. Imhof Jr. has been admitted to practice law in the Republic of the Marshall Islands (“RMI”).

The RMI is home to one of the world’s largest ship registries by gross tonnage. A growing number of business entities formed in the RMI are used as vehicles for shipping and non-shipping activities.

“I’m honored to be sworn in as a member of the Republic of the Marshall Islands bar,” said Mr. Imhof. “With the growing importance of the Marshall Islands as home to one of the world’s largest ship registries, it’s critically important that we are able to provide our shipping and maritime clients with comprehensive Marshall Islands legal advice, including as to Marshall Islands maritime and associations laws.”

“Our Maritime group is now better positioned to serve our clients in one of the most important jurisdictions for shipping and shipping finance in the world,” said Geoffrey R. Kass, Chair of Vedder Price’s Global Transportation Finance team. “We are proud of John’s determination and his commitment to the firm’s many shipping and maritime industry clients.”

Shareholder and current President of the Maritime Law Association of the United States Francis X. Nolan, III is himself well versed in RMI law. Mr. Nolan was the principal draftsman of first-of-its-kind legislation allowing financing bareboat charters to be treated as preferred mortgages, which was enacted into law by the RMI in 2013. Since 2014, Mr. Nolan has annually authored a chapter in Getting the Deal Through on Ship Finance Law in the RMI. Most recently, Mr. Imhof co-authored the 2019 chapter with Mr. Nolan.

“John’s admission to practice law in the Republic of the Marshall Islands adds significantly to our maritime bench strength around the world,” said Mr. Nolan. “Together with our maritime colleagues in New York, London and Singapore, we’re poised to deliver the best-in-class service that our Global Transportation Finance team is known for.”

Mr. Imhof joined Vedder Price in November 2018. He has nearly 30 years of experience advising lenders, lessors, investors, borrowers and lessees in the domestic and cross-border financing of transportation and logistics assets. The Maritime practice group is integral to the Global Transportation Finance team and represents nearly all segments of the maritime industry throughout the world, delivering advice under U.S., English, Marshall Islands and Liberian law.

On July 31, 2019, Governor Pritzker signed into law Public Act 101-0177, which, for the second time this year, amends the Illinois Equal Pay Act of 2003 (“IEPA”).1 The most recent amendments are consistent with trends seen in other jurisdictions (including New York and California) relating to an employer’s ability to inquire regarding an applicant’s wage and salary history and to prevent employees from discussing their pay. Employers must act quickly to comply, as the amendments will be effective on September 29, 2019. Certain key revisions to the IEPA are outlined below.

Wage and Salary History Prohibitions

Under the IEPA amendments, Illinois employers and employment agencies may not:

• Screen job applicants based on their current or prior wage or salary histories (including benefits or other compensation) by requiring that such histories satisfy minimum or maximum criteria;
• Request or require (from an applicant or his/her current or former employer) an applicant’s wage or salary history as a condition of the applicant (a) being considered (or continuing to be considered) for employment or for an offer of compensation and/or (b) being interviewed; or
• Request or require that a job applicant disclose his/her wage or salary history as a condition of employment.

Similarly, an employer may not refuse to hire an applicant, or take adverse action against an employee, for refusing to comply with any wage or salary history inquiry.

Notably, an employer may still provide an applicant with information about the wages and benefits offered, and can discuss with an applicant his/her expectations regarding wages and benefits. Further, if a job applicant voluntarily and without prompting discloses his/her current or prior wage or salary history, the employer will not be found to have violated the IEPA as long as the employer did not consider or rely on the information that was voluntarily provided when determining whether to offer the applicant the job or particular compensation, or when determining future wages, salary, benefits or other compensation.

Pay Transparency

The IEPA amendments will further prohibit employers from requiring employees to sign a contract or a waiver that prohibits an employee from disclosing, or discussing, information regarding the employee’s wages, salary, benefits or other compensation. Even with this limitation, however, an employer may prohibit human resources employees, supervisors and other employees whose job duties require or allow access to employee wage or salary information from disclosing that information, absent the prior written consent of the employee whose information is sought or requested.

Expanded Scope of Comparators

With limited exceptions, the IEPA currently prohibits an employer from paying wages to an employee at a lesser rate than the rate paid to an employee of the “opposite sex,” and from paying wages to an African-American employee at a lesser rate than the rate paid to a non-African-American employee, where the job at issue requires “equal” skill, effort and responsibility. The IEPA amendments, however, will ease the burden on employees seeking to make an IEPA claim, as they will need to show only that the job at issue requires “substantially similar”—but not “equal” —skill, effort and responsibility.

Takeaways

The 2019 IEPA amendments provide for increased penalties and damages for violations of the law, and applicants and employees have five years to bring a claim. With all of this in mind, employers are encouraged to do the following:

• Promptly engage with external head hunters and internal talent acquisition teams to ensure that they understand the law and the limitations it will impose on the recruiting process;
• Remove any wage and salary history inquiries from job applications;
• Review and revise policies and practices relating to recruiting, interviewing and hiring, and ensure that employees who interview candidates are informed of what they cannot ask regarding pay history, and of how they should handle voluntary disclosures of pay history;
• Review and revise policies and agreements which limit an employee’s ability to discuss compensation, including as may be found in confidentiality and restrictive covenant agreements; and
• Consider whether conducting gender and/or race based pay equity audits with legal counsel is appropriate in order to evaluate (and correct) potential disparities.

If you have questions about the IEPA, please contact Elizabeth N. Hall +1 (312) 609-7795, Alex C. Weinstein +1 (312) 609-7853 or any other Vedder Price attorney with whom you have worked.

Monique Chase, a senior Associate in Vedder Price’s New York Labor and Employment group, was recently honored by The National Black Lawyers by being named to their Top 40 Under 40 class of 2019.

The professional honorary association recognizes attorneys under 40 from each state who demonstrate superior leadership, reputation, influence, stature and profile as a black lawyer. Selection is by invitation only following a multi-phase review process that includes peer nominations and third party research.

Ms. Chase focuses her legal practice in the areas of employment-related matters and represents clients in federal and state court, before governmental agencies and regulatory bodies, and in ADR settings. She advises clients on a wide range of subjects, including discrimination, harassment and retaliation claims and disability accommodation and leave laws. Additionally, Ms. Chase provides counsel on Dodd-Frank and Sarbanes-Oxley whistleblower claims, background screening and disclosure requirements, employee investigations and breach of contract and wage and classification claims.

To learn more about The National Black Lawyers, click here.

Vedder Price is pleased to announce that a number of our attorneys and practice groups have been recognized by Legal 500 United States in 2019, including three Top-Tier Firm rankings- two in Transportation (Aviation and Air Travel - Finance; Rail and Road - Finance) for the ninth year in a row and M&A/Corporate and Commercial – M&A – Middle Market (Sub-$500M) for the sixth year in a row, as well as two Second-Tier rankings for Transport: Shipping – Finance and Real Estate - Land Use Zoning. 

Practice Group Rankings

Top-Tier Firm

• Transport: Aviation and Air Travel – Finance
• Transport: Rail and Road – Finance
• M&A/Corporate and Commercial – M&A: Middle-Market (Sub-$500M)
  
  

Recommended

• Dispute Resolution - Securities Litigation – Defense
• Transport: Shipping – Finance
• Investment Fund Formation and Management – Mutual/Registered/Exchange-Traded Funds
• Labor and Employment – Employee Benefits, Executive Compensation and Retirement Plans – Design
• Labor and Employment – Employee Benefits, Executive Compensation and Retirement Plans –Transactional
• Labor and Employment – Immigration
• Labor and Employment – Labor and Employment Disputes (Including Collective Actions): Defense
• Labor and Employment – Labor-Management Relations
• Real Estate – Land Use/Zoning
  
  

Attorney Accolades

Leading Lawyers

• John T. Bycraft: Transport: Rail and Road – Finance 
• Danielle Meltzer Cassel: Real Estate – Land Use/Zoning
• Michael E. Draz: Transport: Rail and Road – Finance
• Dean N. Gerber: Transport: Aviation and Air Travel – Finance
• Geoffrey R. Kass: Transport: Aviation and Air Travel – Finance
• Michael A. Nemeroff: M&A/Corporate and Commercial – M&A: Middle-Market (Sub-$500M)
• Francis X. Nolan III: Transport: Shipping – Finance
• Jeffrey T. Veber: Transport: Aviation and Air Travel – Finance 
  
  

Recommended

• Nicholas Anaclerio: Labor and Employment – Labor and Employment Disputes (Including Collective Actions) – Defense
• Adam R. Beringer: Transport – Aviation and Air Travel – Finance
• Amy L. Bess: Labor and Employment – Labor and Employment Disputes (Including Collective Actions) – Defense; Labor and Employment – Labor Management Relations
• William J. Bettman: M&A/Corporate and Commercial – M&A – Middle-Market (Sub-$500M)
• Eugene A. Boyle: Labor and Employment – Labor and Employment Disputes (Including Collective Actions) – Defense; Labor and Employment – Labor Management Relations
• John E. Bradley: Transport: Shipping – Finance
• John T. Bycraft: Transport: Aviation and Air Travel – Finance; Transport – Rail and Road – Finance
• Danielle Meltzer Cassel: Real Estate – Land Use/Zoning
• Thomas P. Cimino: Dispute Resolution – Securities Litigation – Defense
• Christopher T. Collins: Labor and Employment – Employee Benefits, Executive Compensation and Retirement Plans – Design; Labor and Employment – Employee Benefits, Executive Compensation and Retirement Plans – Transactional
• Sara B. DeBlaze: Labor and Employment – Immigration
• Thomas P. Desmond: Labor and Employment – Employee Benefits, Executive Compensation and Retirement Plans – Design; Labor and Employment – Employee Benefits, Executive Compensation and Retirement Plans – Transactional
• Mark J. Ditto: Transport: Aviation and Air Travel – Finance
• Brendan G. Dolan: Labor and Employment – Labor and Employment Disputes (Including Collective Actions) – Defense
• Michael E. Draz: Transport: Aviation and Air Travel – Finance; Transport – Rail and Road – Finance
• Deborah Bielicke Eades: Investment Fund Formation and Management – Mutual/Registered/Exchange-Traded Funds
• Cameron A. Gee: Transport: Aviation and Air Travel – Finance; Transport – Rail and Road – Finance
• Dean N. Gerber: Transport: Aviation and Air Travel – Finance
• Thomas G. Hancuch: Labor and Employment – Employee Benefits, Executive Compensation and Retirement Plans – Design
• Robert J. Hankes: Transport: Aviation and Air Travel – Finance
• Renee M. Hardt: Investment Fund Formation and Management – Mutual/Registered/Exchange-Traded Funds
• John F. Imhof: Transport: Shipping – Finance
• Geoffrey R. Kass: Transport: Aviation and Air Travel – Finance; Transport: Rail and Road – Finance; Transport: Shipping – Finance
• Jennifer Durham King: Labor and Employment – Employee Benefits, Executive Compensation and Retirements Plans – Transactional
• Joseph H. Kye: M&A/Corporate and Commercial – M&A – Middle-Market (Sub-$500M)
• Daniel B. Lange: Labor and Employment – Employee Benefits, Executive Compensation and Retirement Plans – Transactional; Labor and Employment – Employee Benefits, Executive Compensation and Retirement Plans – Design
• Randall M. Lending: Dispute Resolution – Securities Litigation – Defense
• Adam S. Lewis: M&A/Corporate and Commercial – M&A – Middle-Market (Sub-$500M)
• Joseph M. Mannon: Investment Fund Formation and Management – Mutual/Registered/Exchange-Traded Funds
• John S. Marten: Investment Fund Formation and Management – Mutual/Registered/Exchange-Traded Funds
• Daniel C. McKay: Labor and Employment – Employee Benefits, Executive Compensation and Retirements Plans – Transactional
• Sadina Montani: Labor and Employment – Labor and Employment Disputes (Including Collective Actions) – Defense
• James W. Morrissey: Labor and Employment – Employee Benefits, Executive Compensation and Retirements Plans – Transactional
• Michael A. Nemeroff: M&A/Corporate and Commercial – M&A – Middle-Market (Sub-$500M)
• Francis X. Nolan, III: Transport: Shipping – Finance
• John R. Obiala: M&A/Corporate and Commercial – M&A – Middle-Market (Sub-$500M)
• Cathy Gonzales O’Kelly: Investment Fund Formation and Management – Mutual/Registered/Exchange-Traded Funds
• Shelby E. Parnes: M&A/Corporate and Commercial – M&A – Middle-Market (Sub-$500M)
• Thomas H. Petrides: Labor and Employment – Labor and Employment Disputes (Including Collective Actions) – Defense
• Jason W. Reese: M&A/Corporate and Commercial – M&A – Middle Market (Sub-$500M)
• Bruce A. Rosenblum: Investment Fund Formation and Management – Mutual/Registered/Exchange-Traded Funds
• Heather M. Sager: Labor and Employment – Labor and Employment Disputes (Including Collective Actions) – Defense; Labor and Employment – Labor-Management Relations
• Christopher A. Setteducati: Transport: Aviation and Air Travel – Finance
• Guy E. Snyder: M&A/Corporate and Commercial – M&A – Middle-Market (Sub-$500M)
• Patrick W. Spangler: Labor and Employment – Employee Benefits, Executive Compensation and Retirement Plans – Design; Labor and Employment – Labor and Employment Disputes (Including Collective Actions) – Defense; Labor and Employment – Labor-Management Relations
• Kenneth F. Sparks: Labor and Employment – Labor-Management Relations
• Kelly A. Starr: Labor and Employment – Employee Benefits, Executive Compensation and Retirement Plans – Design; Labor and Employment – Employee Benefits, Executive Compensation and Retirement Plans – Transactional
• Mark L. Stolzenburg: Labor and Employment – Labor-Management Relations
• Raviv Surpin: Transport: Aviation and Air Travel – Finance
• Venu V. Talanki: M&A/Corporate and Commercial – M&A – Middle Market (Sub-$500M)
• Joel R. Thielen: Transport: Rail and Road – Finance
• Clay Thomas: Transport: Rail and Road – Finance
• Jeffrey T. Veber: Transport: Aviation and Air Travel – Finance
• Thomas M. Wilde: Labor and Employment – Labor and Employment Disputes (Including Collective Actions) – Defense
• Benjamin O. Williams: M&A/Corporate and Commercial – M&A – Middle Market (Sub-$500M)
• Candice T. Zee: Labor and Employment – Labor and Employment Disputes (Including Collective Actions) – Defense; Labor and Employment – Labor-Management Relations 
• Anna Zielinski: Labor and Employment – Employee Benefits, Executive Compensation and Retirement Plans – Transactional 
• Junaid A. Zubairi: Dispute Resolution – Securities Litigation – Defense

Next Generation Lawyers

• Robert J. Hankes: Transport: Aviation and Air Travel – Finance
• Clay Thomas: Transport: Rail and Road – Finance
• Shelby E. Parnes: M&A/Corporate and Commercial – M&A: Middle-Market (Sub-$500M)

"Rising Star" Lawyers

• Benjamin Williams: M&A/Corporate and Commercial – M&A: Middle Market (Sub-$500M)

The Legal 500 United States is an independent guide. Firms and individuals are recommended purely on merit. More than 250,000 corporate counsel have been surveyed and interviewed globally in the past 12 months. Only a small number of firms in the United States have a truly national presence coupled with the capability to handle sophisticated and complex work; these are the firms that are chosen for the Legal 500 honors.

U.S. issuers (including private investment funds such as hedge, private equity and venture capital funds) must report certain data regarding holdings of their securities by non-U.S. residents to the U.S. Treasury via Form TIC SHL. This mandatory report is conducted by the U.S. Treasury every five years. Investment advisers that manage domestic funds must file Form TIC SHL if the total market value of the interests issued by such funds owned directly by non-U.S. persons was $100 million or more as of June 30, 2019. For purposes of calculating this $100 million threshold, holdings by an affiliated non-U.S. feeder fund are generally included.

Form TIC SHL must be submitted by August 30, 2019. Firms can be fined up to $25,000 for failing to provide timely and accurate data depending on the circumstances.

Formal instructions for submitting Form TIC SHL can be
found here.

Please contact Vedder Price attorneys Joe Mannon, Jeff VonDruska or Cody Vitello for assistance completing Form TIC SHL.

On June 12, 2019, the U.S. Court of Appeals for the Seventh Circuit decided Bodum USA, Inc. v. A Top New Casting Inc., No. 18-3030, 2019 U.S. App. LEXIS 17555 (7th Cir. June 12, 2019). The case, led by Vedder Price Shareholder Nicole Wing, was based on an allegation of infringement by A Top of Bodum’s unregistered trade dress in its Chambord® French press coffee maker design and squarely addressed the doctrine of “functionality” of trade dress. The court addressed two important issues related to functionality: (1) what type of evidence is necessary to prove functionality of a particular design and (2) under what circumstances are utility patents relevant to that analysis? Counseled by Vedder Price, Bodum convinced the court to accept its position on these crucial questions.

In Bodum, there was no dispute that the designs were similar (as shown below with the Bodum design on the left and the A Top French press on the right):

Bodum, 2019 U.S. App. LEXIS 17555, at *2. Evidence presented at trial established that Bodum has a long history of protecting the design of its Chambord® French press and advertising its distinctive features, namely, its metal cage, metal pillars ending in curved feet, C-shaped handle and domed lid topped with a spherical knob. Id. at *3.

Trade dress, which is a variety of trademark protection, refers to a particular design or configuration (including packaging or the design of the product itself) that is so distinctive that consumers immediately recognize it as associated with a unique source. Trademark law is based on consumer protection laws. Thus, if a company markets a particular good or service (such as a French press coffee maker) in a way that confuses a consumer into believing that the good or service is that of someone else, such actions constitute unfair competition, and the action is one for trademark infringement. For any trademark infringement claim, a trademark owner needs to prove that it has a valid trademark (that is, that the mark is distinctive enough that consumers associate it with a single source), and that the accused mark is likely to cause confusion as to source. When the trademark is trade dress, there is an additional requirement to show infringement. Because trade dress applies to the configurations (e.g., shape) of a product, there is an additional requirement on the trade dress owner to prove that the trade dress is not “functional.” A trade dress is “functional” if it confers an unfair advantage in terms of cost or quality, or would exclude others from competing for the same type of product. The distinction is necessary because functional innovations (i.e., what things do and how they work) can be protected only through the grant of a utility patent. Obtaining a utility patent requires the overcoming of significant hurdles, including proving that the functional innovation is both new (nobody has done it before) and not obvious (even if new, it would not have been obvious to do). If a person could obtain trade dress protection for functional designs, that person could obtain the equivalent of utility patent protection without meeting the stringent requirements for entitlement to a utility patent.

The tension between utility patent protection and trade dress protection is exemplified by the U.S. Supreme Court’s case, TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 28–29 (2001). In that case, the Court held that there is a rebuttable presumption that features of a design patent (which is very similar to trade dress protection in that it protects ornamental, nonfunctional designs) that are claimed in a utility patent are functional. Because of the close similarity between design patent protection and trade dress protection, the Seventh Circuit extended that same presumption to trade dress protection. Georgia-Pacific Cons. Prods., LP v. Kimberly-Clark Corp., 647 F.3d 723, 727–28 (7th Cir. 2011). Those cases were important aspects of the district court litigation between Bodum and A Top.

To prove infringement in the case at hand, Bodum had to establish three elements: (1) it owned a valid trade dress in the Chambord® French press product, (2) the designs of the Chambord® French press and the A Top product were likely to cause confusion among consumers and (3) the trade dress of the Chambord® French press was not functional.

Bodum prided itself on the beautiful design of its products, including the French press coffeemaker trademarked as the Chambord ®. The Chambord ® French press was originally designed by a French designer, who took his inspiration from the tops of the towers of the Chateau Chambord, located in the Loire Valley in France. In 1991, Bodum purchased Martin SA, which owned the Chambord ® design. Since that time, Bodum alleged that it has grown the design into an icon and has been working with Vedder Price to vigorously enforce its intellectual property “trade dress.” At trial, Bodum introduced the numerous design awards the Chambord ® has received, as well as the Chambord ®’s recognition by the Museum of Modern Art and multiple design publications (such as Phaidon Design Classics and Red Dot Design Yearbook) as “classic,” “legendary” and “timeless.”

Consequently, A Top did not contest likelihood of confusion or Bodum’s ownership of the trade dress. Instead, it contested only the functionality of the design. Bodum, 2019 U.S. App. LEXIS 17555, at *6–7.

A jury returned a verdict for Bodum, awarding $2 million in damages, which the district court doubled to $4 million for willfulness. Id. at *5–6. On appeal, A Top made two arguments. It argued first that Bodum had not met its burden of proving non-functionality, and second that the district court had erred by excluding from evidence certain utility patents that would have established functionality.

The Seventh Circuit affirmed. On the burden issue, the Seventh Circuit faulted A Top for painting its functionality picture too broadly, focusing on the functionality of the elements themselves instead of the functionality of the actual designs. As the Seventh Circuit noted (with its emphasis):

Bodum does not claim that any French press coffeemaker with a handle, a domed top, or metal around the carafe infringes on its trade dress. Rather, it is the overall appearance of A Top’s SterlingPro, which has the same shaped handle, the same domed lid, the same shaped feet, the same rounded knob, and the same shaped metal frame as the Chambord, that Bodum objects to. Thus, to establish it has a valid trade dress, Bodum did not have to prove that something like a handle does not serve any function. It merely needed to prove that preventing competitors from copying the Chambord’s particular design would not significantly disadvantage them from producing a competitive and cost-efficient French press coffeemaker.

Id. at *9–10. The court went on to cite the testimony of both parties’ experts that the particular elements of the Chambord® French press were not necessary to the design, or that alternatives would work just as well (if not better). Id. at *10–12. The court also noted the testimony that the trade dress design did not confer an unfair advantage in terms of cost or quality (one way of determining whether a trade dress is functional). In fact, Bodum’s use of metal components and particularly shaped handle made the design more expensive than alternative French presses with feet, a cage, a handle and a domed lid. Id. at *13–14. In other words, Bodum’s Chambord® design did not confer an unfair competitive advantage on Bodum, since other equally functional French press designs remained available, including ones at a lower cost.

The court next addressed A Top’s argument that the district court had erred by excluding utility patents that would have shown the trade dress to be functional. At trial, Bodum’s expert was asked whether certain utility patents disclosed the elements of Bodum’s trade dress. Id. at *16–17. However, only portions of the patents were shown to the witness, consisting largely of pictures taken from those patents. Id. at *17. The witness testified that he could not tell what were disclosed as important functional elements in the patents solely from pictures. Id. What a utility patent actually protects as the functionality of the innovation is described in words at the end of the patent, called “claims,” and not in pictures. Because he understood the claims to be critical to the question of what aspects of those patents were functional, and he had been presented with pictures and not the patents’ actual claims, Bodum’s expert could not make an assessment of any functionality based on the patents A Top’s attorneys presented to him. Id.

Upon objection, the district court excluded the patents as potentially confusing to a jury under Federal Rule of Evidence 403.¹ The district court, recognizing that a utility patent can create a presumption of functionality, nevertheless limited that presumption to circumstances in which the utility patent claims the trade dress features in some “significant way.” Id. at *19. The district court found that features at issue in the case were not claimed in the subject patents, elaborating as follows:\

[T]here is a massive potential for jury confusion here if these things are used in the way, frankly, that they were used during the cross-examination of the [ ] expert. You put a picture up there, that’s got a handle, it’s got a knob, it’s got a plunger, it’s cylindrical like yours, that’s not what the inquiry is. The inquiry isn’t whether somebody has drawn this picture before. The inquiry is whether ... the features are claimed in a patent in a way that shows that they have some sort of a function.

Id. at *20 (quoting the district court).

The Seventh Circuit agreed with the district court. The court cited TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 28–29 (2001), and Georgia-Pacific Cons. Prods., LP v. Kimberly-Clark Corp., 647 F.3d 723, 727–28 (7th Cir. 2011), in support.

In framing the court’s analysis, the court pointed out that the “patents A Top sought to introduce do not claim any of the features that comprise the claimed Chambord trade dress.” See TrafFix Devices, 532 U.S. at 29 (utility patents are evidence ‘that the features therein claimed are functional’ (emphasis added)).” Bodum, 2019 U.S. App. LEXIS 17555, at *20–21. The court further stated that the particular patents, which at least appeared to show “French presses with handles, domed lids, or knobs; are irrelevant to the legal question of functionality because the patents do not claim any of those features as part of the patented invention. Permitting the jury to view and consider the patents would cause confusion as to the appropriate inquiry for functionality.” Id. at *21 (emphasis added). Finally, the court distinguished the case below (in which the district court properly excluded utility patents that did not claim the trade dress elements) from a prior case in which the court had reversed a district court that had determined on summary judgment that the feature claimed in the patent was not functional, saying that the matter of whether the claim feature was part of the functionality or just “incidental” was a matter for the jury. Id. at *22.

The case is most interesting because of the way the court handled the utility patent evidence. According to Ms. Wing, “Trade dress is always a difficult claim to prove, and this victory is paramount to our client, Bodum’s, protection of its brand going forward.” The decision indicates that the court clearly drew the line on use of the utility patents at whether the trade dress element was claimed in those patents or not. Its language supporting the district court’s decision repeatedly made reference to the fact that the utility patents did not claim the particular elements of Bodum’s trade dress. Further, the court distinguished an earlier case in which utility patents were required to be considered by a jury based on the fact that the feature at issue there was in the claims. The court’s decision not only limits the applicability of utility patents in trade dress cases, it suggests that such patents may not even be admissible unless the party introducing those patents into evidence can point to the trade dress elements in the claims.

For any questions about Bodum or this case, contact Shareholder Nicole Wing. For questions about enforcement of any intellectual property case, contact Shareholder Daniel Shulman. Both Nicole and Daniel are shareholders in Vedder Price’s Chicago office. Mr. Shulman is an experienced litigator who has successfully litigated both patent and trade dress cases to jury verdicts. Ms. Wing is also an experienced litigator in the areas of trade dress, trade secrets and commercial litigation and is the lead shareholder for Bodum.

Please join us for our annual look forward to the year ahead in employment law. The roundtable discussion will be hosted by Vedder Price’s employment solicitors, who will discuss the “hot topics” for employers in 2019, and how best to prepare for them.

Our session will be an interactive and practical discussion, to include:

Brexit: Implications for Employers

Practical Steps for Employers Concerning Non-Disclosure Agreements, "Gagging Clauses" and Investigations

2019 Legal Roundup: Key Developments on HR's Radar

Event Details

Wednesday 19 June | 18:00 - 20:00 (GMT)

Vedder Price Offices | London, United Kingdom
4 Coleman Street 
London EC2R 5AR

Refreshments to follow.

Who should attend: This event is intended for in-house counsel and human resource professionals.

CPD Credit

This program will be submitted for review, once our agenda is finalized.

To learn more about other 2019 Vedder Works seminars and webinars, please click here.

Please join us at the following session designed for in-house counsel and human resource professionals, led by the Labor & Employment attorneys of Vedder Price. At this complimentary session, we will discuss important legal updates and labor and employment best practices.

Event Details

Wednesday, October 23 | 8:30 a.m. - 12:00 p.m. (ET)

Newseum | Washington, DC
555 Pennsylvania Ave NW, Washington, DC 20001

Breakfast provided; Lunch to follow from 12:00 p.m. - 1:00 p.m.

Who should attend: This event is intended for in-house counsel and human resource professionals.

 
Agenda Topics

DC Paid Family Leave: The Time to Prepare is Now!

When Your Workforce Works Remotely - Challenges, Strategies, and Practical Solutions

Mental Health Issues at Work: FMLA/ADA Compliance

Cybersecurity: What You Need to Do Now to Protect Your Workplace Data

Marijuana in the Workplace

Making Workplace Culture Change Stick

CLE & HRCI Credit

Vedder Price is an accredited CLE provider in California, Illinois, and New York; and, when possible, a sponsor in Virginia.

This program will be submitted to the HR Certification Institute for review, once our agenda is finalized.

To learn more about other 2019 Vedder Works seminars and webinars, please click here.